Trade marks and infringement
Written by Michael Coyle on 16 November 2013« Return to Reading Room
The founding principle is that the owner has the exclusive rights to the use of the trade mark to the exclusion of anyone else ie you have a monopoly to use the trade mark. The opponent must be using the trade mark in the course of trade and without your consent.
Basic position is based on three scenarios, notwithstanding this the onus is on the owner of the mark to establish an infringement.
1. That it is an infringement for a person (in the course of trade and without consent) to use 'any sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered' – Art 5(1)(a) of the Trade Marks Directive; s 10(1) of the TMA 1994; Art 9(1)(a) of the CTMR.
2. That it is an infringement for a person (in the course of trade and without consent) to use 'any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with between the sign and the trade mark' – Art 5(1)(b) of the Directive; s 10(2) of the TMA 1994; Art 9(1)(b) of the CTMR.
3. That it is an infringement for a person (in the course of trade and without consent) to use 'any sign which is identical with, or similar to, the trade mark in relation to goods of services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark' – Art 5(2) of the Directive and Art 9(1)(c) of the CTMR. This section applies whether the goods or services in question are identical, similar or dissimilar.
When can I bring a claim for trade mark infringement? You can only bring a claim once the trade mark is registered but the date of registration is the date of the filing. Where can I bring a claim for trade mark infringement? The TMA 1994 provides that a UK trade mark can only be infringed by acts in the United Kingdom. The CTMR by contrast has equal effect throughout the Community and can be infringed by acts occurring in any part of the Community.
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